In its Answer, Nike asks for a declaration that Nike is the sole owner of copyrights in the modified “KL2” logo, a finding that Kawhi’s use of the modified “KL2” logo infringes the copyrights owned by Nike, cancellation of Kawhi’s copyright registration to the modified “KL2” logo due to fraud in his copyright application, and a finding that Kawhi breached the “Men’s Pro Basketball Contract” he entered into with Nike on October 26, 2011.

Background

According to Nike’s Answer, Nike and Kawhi entered into an endorsement contract effective Oct. 1, 2011. The endorsement contract included standard terms and conditions including that:

“NIKE shall exclusively own all rights, title and interest in and to any logos, trademarks, service marks, characters, personas, copyrights, shoe or other product designs, patents, trade secrets or other forms of intellectual property created by NIKE (and/or its agents), CONSULTANT or ATHLETE in connection with this Contract”.

On or about April 14, 2014, Kawhi sent a sketch of his original “KL2” logo to Nike. Nike’s designers then created several proposed logos based on Kawhi’s sketch, including the modified “KL2” logo. Nike began selling merchandise branded with the modified “KL2” logo as early as spring of 2016. They then filed a copyright …

In its Answer, Nike asks for a declaration that Nike is the sole owner of copyrights in the modified “KL2” logo, a finding that Kawhi’s use of the modified “KL2” logo infringes the copyrights owned by Nike, cancellation of Kawhi’s copyright registration to the modified “KL2” logo due to fraud in his copyright application, and a finding that Kawhi breached the “Men’s Pro Basketball Contract” he entered into with Nike on October 26, 2011.

Background

According to Nike’s Answer, Nike and Kawhi entered into an endorsement contract effective Oct. 1, 2011. The endorsement contract included standard terms and conditions including that:

“NIKE shall exclusively own all rights, title and interest in and to any logos, trademarks, service marks, characters, personas, copyrights, shoe or other product designs, patents, trade secrets or other forms of intellectual property created by NIKE (and/or its agents), CONSULTANT or ATHLETE in connection with this Contract”.

On or about April 14, 2014, Kawhi sent a sketch of his original “KL2” logo to Nike. Nike’s designers then created several proposed logos based on Kawhi’s sketch, including the modified “KL2” logo. Nike began selling merchandise branded with the modified “KL2” logo as early as spring of 2016. They then filed a copyright application for the modified “KL2” logo which issued as US copyright registration number VA0002097900 effective May 11, 2017.

The endorsement contract between Kawhi and Nike expired on Sept. 30, 2018. In November of 2018, Kawhi signed a new endorsement contract with New Balance, Inc. Not surprisingly, the “KL2” logo became an item of contention rather quickly. In December of 2018, Nike wrote to Kawhi that Nike owned the modified “KL2” logo pursuant to its US copyright registration and demanded that Kawhi cease use of the modified “KL2” logo on non-Nike merchandise. Kawhi responded in January of 2019 that he intended to continue using the modified “KL2” logo on non-Nike merchandise. In March of 2019, Nike responded that it owned all intellectual property in the modified “KL2” logo and demanded that Kawhi cease all unauthorized use.

On May 3, 2019, in the midst of the NBA finals, Kawhi Leonard filed his lawsuit against Nike. Kawhi’s lawsuit asked for a declaration that Kawhi is the sole author of the modified “KL2” logo, that his use of the modified “KW2” logo does not infringe the rights of Nike, and that Nike committed fraud in its copyright application for the modified “KL2” logo. Kawhi appears to have filed his own copyright application on June 3, 2019 which resulted in US copy Right Registration number VA0002153704.

Copyrights

Without the benefit of viewing the original “KL2” logo”, I previously indicated that there were three possible scenarios with regard to copyrights in the modified “KL2” logo. These were that modifications to the original “KL2” logo are:

So minor that the modified “Kl2” logo, as a whole, is a copy or variation of the original “KL2” logo

Significant enough that the modified “KL2” logo, as a whole, represents an original derivative work

So transformative that the modified “KL2” logo, as a whole, represents an entirely new original work that is distinct from the original “KL2” logo

Original “KL2” logo Modified “KL2” logo

In comparing the original “KL2” logo” and the modified “KL2” logo (which are shown above), it is clear that the modifications to the original “KL2” logo are not minor and the modified “KL2” logo is not a copy or variation of the original “KL2” logo. For example, the wording “KL2” overlays an outline of a hand in the original “KL2” logo while the wording “KL2” forms a hand in the modified logo. It is important to note that pen names, pseudonyms, phrases, mottos, slogans, catchwords, advertising expressions and the like are not protectable by copyrights. If they are part of an original design or logo, however, the design or logo can be protectable by copyrights, but the copyrights cannot stop someone else from using the basic “words” in another way.

More broadly stated, copyrights do not protect facts or ideas; although they can protect the way those facts or ideas are expressed. The KL2 wording is expressed in a significantly different way between the two logos. Thus, we only need to review scenarios two (derivative work) and three (transformational) work in more detail.

Derivative Works

A derivative work is a new work that is based upon or derived from one or more pre-existing works. Common examples of derivative works are a translation of a book to a different language, a motion picture version of prior book or play, and a sequel movie that takes characters from a prior movie and tells what happened to those characters after the events in the prior movie. A derivative work must display some originality of its own separate from the pre-existing work. The derivative work cannot be an uncreative variation on the pre-existing work or it would simply be a copy of the pre-existing work.

As a result, a derivative work obtains copyrights separate from the copyrights of the pre-existing work. The copyrights in the derivative work protect only the new original elements in the derivative work that are created by the author of the derivative work. The copyrights in all the elements taken from the pre-existing work remain with the author of the pre-existing work.

The owner of the copyrights in the pre-existing work has the exclusive right to prepare and authorize others to prepare derivative works based on the pre-existing work. In the absence of contractual restrictions, a derivative work prepared under a grant to prepare a derivative work before termination of the grant is owned by the author of the derivative work, and the derivative work may continue to be utilized by the author of the derivative work under the terms of the grant after termination of the grant.

Without authorization from the owner of the copyrights in the pre-existing work, the creation of a derivative work is copyright infringement. However, the fair use doctrine protects transformational uses of pre-existing works without authorization from the owner of the copyrights in the pre-existing work.

Transformational Works

The fair use doctrine is a defense to copyright infringement that allows an otherwise “infringer” to make limited use of a pre-existing work without receiving authorization from the owner of the copyrights in the pre-existing work. In determining whether a particular use qualifies as fair use, four primary factors must be considered:

Purpose and character of the use

Nature of the original work

Amount and substantiality of the portion used

Effect of the use on the potential market for or value of the source work. However, courts also consider the concept of “transformation” which is sometimes referred to as the “fifth factor”

Transformative use is relatively new, being first used by the U.S. Supreme Court in 1994, in Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994). A transformational work is like a derivative work in that it is based upon or derived from one or more pre-existing works. However, a transformational work uses the pre-existing work in such a completely new way or for such a completely new purpose that it is an original work separate and distinct from the pre-existing work. A transformational work is non-infringing of the pre-existing work even without authorization of the owner of the pre-existing work. Importantly, a work may be a transformational work even when all of the four statutory factors weigh against fair use. It is noted that the determination of whether a work is a transformational work is very fact intensive and very unpredictable.

Possible Outcomes

The parties appear to agree that Nike was authorized to modify the original “KL2” logo. Therefore, if it is determined that the modified “KL2” logo is a derivative work (the second scenario discussed above), Nike will own the copyrights to the modified “KL2” logo and can continue to use the modified “KL2” logo in the absence of any contractual restrictions stating otherwise. The endorsement contract does not appear to contain any such restrictions. This second scenario is not consistent with Nike’s copyright application because Nike did not indicate in its copyright application that the modified “KL2” logo was a derivative work. As a result, in this second scenario, Nike’s copyright registration is at risk of cancellation

If it is determined that the modified “KL2” logo is so transformative that the modified “KL2” logo, as a whole, represents an entirely new and distinct work of authorship (the third scenario discussed above), Nike will own the copyrights to the modified “KL2” logo and can continue to use the modified “KL2” logo in the absence of any contractual restrictions stating otherwise. The endorsement contract does not appear to contain any such restrictions. This third scenario is consistent with Nike’s copyright application because Nike did not indicate in its copyright application that the modified “KL2” logo was a derivative work.

Thus, Nike will prevail in each of these scenarios unless Kawhi can successfully establish that there was an express contractual provision in writing that overrides the above discussed copyright law and the endorsement agreement. Not surprisingly, Kawhi asserted in his complaint that he and Nike agreed that Nike could use the logo (although it is not clear which logo) “for the specific purpose of effectuating the Nike Agreement for the term of the contract”. If Kawhi can prove that there was such an agreement in writing with regard to the modified “KL2” logo, than Nike would no longer be able to use the modified “KL2” logo because the endorsement agreement has expired.

Even if proved, Kawhi still could not use the modified “KL2” logo because Nike would still own the copyrights in the modified “KL2” logo, unless Kawhi could prove that ownership of the copyrights in the modified “KL2” logo was transferred from Nike to him. A transfer of copyright ownership, other than by operation of law, is not valid unless the transfer of specifically identified rights is in writing and signed by the owner of the copyrights being transferred. It looks very unlikely that Kawhi will be able to use the modified “KL2” logo.

An alternative for Kawhi is to use the original “KW2” logo which he created prior to the endorsement agreement and independently of the endorsement agreement. Kawhi still owns copyrights in the original “KW2” logo. However, this use could result into a trademark controversy if Nike continues to use the modified “KL2” logo as a trademark, with the question being: Is Kawhi’s trademark use of the original “KL2” logo confusingly similar to Nike’s trademark use of the modified “KL2 logo?

]]>Kawhi Leonard v. Nike Inc.: How copyrights can trump trademarks?https://www.technologylawsource.com/2019/06/articles/intellectual-property-1/copyright/kawhi-leonard-v-nike-inc-how-copyrights-can-trump-trademarks/
Wed, 26 Jun 2019 12:00:00 +0000https://www.technologylawsource.com/?p=5786On Monday, May 3, 2019, in the midst of the NBA finals, Kawhi Leonard of the Toronto Raptors filed a lawsuit against Nike, Inc. (Nike) in the US District Court Southern District of California. The complaint asks the Court for a declaration that Kawhi is the sole author of the “KL2” logo, that his use of that logo does not infringe the rights of Nike, and that Nike committed fraud in its copyright application. The “KL2” logo is sometimes referred to as the “Klaw” logo which is a nickname for Kawhi. Kawhi owns US trademark registration number 5608427 for the “KL2” logo for use with apparel. However, Nike owns US copyright registration number VA0002097900 for the “KL2” logo.

According to the complaint, Kawhi created the “KL2” logo in 2011 just after being drafted by the San Antonio Spurs of the NBA. He said that he “traced his notably large hand, and, inside the hand, drew stylized versions of his initials ‘KL’ and the number that he had worn for much of his career, ‘2’”. Kawhi said that the drawing “was an extension and continuation of drawings he had been creating since early in his college career.” According to Kawhi, he then continued to refine the “KL2” logo as he shared it with family and friends and sought the advice of a creative designer. In October of 2011, Kawhi signed an endorsement agreement …

On Monday, May 3, 2019, in the midst of the NBA finals, Kawhi Leonard of the Toronto Raptors filed a lawsuit against Nike, Inc. (Nike) in the US District Court Southern District of California. The complaint asks the Court for a declaration that Kawhi is the sole author of the “KL2” logo, that his use of that logo does not infringe the rights of Nike, and that Nike committed fraud in its copyright application. The “KL2” logo is sometimes referred to as the “Klaw” logo which is a nickname for Kawhi. Kawhi owns US trademark registration number 5608427 for the “KL2” logo for use with apparel. However, Nike owns US copyright registration number VA0002097900 for the “KL2” logo.

Background

According to the complaint, Kawhi created the “KL2” logo in 2011 just after being drafted by the San Antonio Spurs of the NBA. He said that he “traced his notably large hand, and, inside the hand, drew stylized versions of his initials ‘KL’ and the number that he had worn for much of his career, ‘2’”. Kawhi said that the drawing “was an extension and continuation of drawings he had been creating since early in his college career.” According to Kawhi, he then continued to refine the “KL2” logo as he shared it with family and friends and sought the advice of a creative designer. In October of 2011, Kawhi signed an endorsement agreement with Nike.

At some point thereafter, Kawhi and Nike began discussions about creating a logo to affix to Nike merchandise sold under the endorsement agreement. Kawhi proposed using his “KL2” logo. According to the complaint, after modifications by Nike and several proposals, Kawhi accepted a June 2014 proposal and granted Nike permission to affix the modified “KL2” logo, based on Kawhi’s original “KL2” logo, on “Nike merchandise during the term of the Nike Agreement”. While there was an exchange of various e-mails and communications, it does not appear that there was a formal written agreement regarding the”KL2” logo. Nike proceeded to affix the “KL2” logo to Nike merchandise including several shoes under the Jordan Brand. Kawhi also proceeded to use the “KL2” logo on non-Nike merchandise including “apparel and merchandise used for basketball camps, appearance and charity events.”

All parties seemed happy until the endorsement agreement between Kawhi and Nike finally expired on Sept. 30, 2018. In November 2018, Kawhi signed a surprise deal with New Balance, Inc. effectively becoming the new face of the New Balance basketball division. Not surprisingly, the “KL2” logo became an item of contention rather quickly. In December 2018, Nike wrote to Kawhi that Nike owned the “KL2” logo pursuant to its US copyright registration and demanded that Kawhi cease use of the “KL2” logo on non-Nike merchandise.

Kawhi, who was previously unaware of the copyright registration, responded in January 2019 that he intended to continue using the ‘KL2” logo on non-Nike merchandise and “might affix the Leonard Logo and Leonard trademarks to the shoes he would be wearing as a player for the Raptors.” In March 2019, Nike responded that it owned all intellectual property in the “KL2” logo and demanded that Kawhi cease all unauthorized use.

Trademark rights

Trademark rights are established automatically by using the trademark in commerce in connection with the sale of goods or services. Formal registration with the US Patent and Trademark Office is not required to establish trademark rights. However, formal registration of trademarks does provide certain advantages. Kawhi obtained US trademark registration number 5608427 for the “KL2” logo for use in connection with various apparel claiming a first use of at least February 2016. These trademark rights enable Kawhi to prevent others from using the “KL2” logo or similar logos in connection with the sale of goods or services that are likely to cause confusion among consumers of the relevant goods or services.

Nike has not filed for registration of the “KL2” logo as a trademark even though Nike appears to have used the “KL2” logo in connection with the sale of shoes as early as 2014. This may be a result of Nike believing that the “KL2” logo was owned by Kawhi and licensed to Nike for use on Nike-merchandise. It is also may be the result of Nike deciding not to register this trademark, but that is unlikely. Because trademark rights are established by first use, If Nike believes that it has trademark rights to the “KL2” logo, it could still decide to file its own application for trademark registration and file to cancel Kawhi’s trademark registration.

There is no indication that Kawhi or Nike has raised the issue of trademark ownership or trademark infringement with the other party. The reason is because the trademark in this dispute is a logo and logos are two-dimensional works of fine, graphic or applied art subject to copyrights. Thus, even the owner of trademark rights cannot use their trademark if another party owns copyrights in visual art elements of the trademark because use of the trademark by the trademark owner would constitute copyright infringement. In other words, the copyrights trump the trademark rights in these circumstances.

Copyrights

Copyrights are automatic in that you establish copyrights for an original work of authorship the moment you put it into a tangible form. Formal registration of copyrights with the United States Copyright Office is not required to establish copyrights. However, formal registration does provide certain advantages. Thus, Kawhi obtained copyrights to the original “KL2” logo the moment he drew it onto paper even though he has not registered those copyrights.

Employees of Nike modified the original “KL2” logo to form the modified “KL2” logo at issue. The degree of those modifications determines what if any copyrights Nike owns for the modified “KL2” logo. There are three possible scenarios:

The modifications to the original logo are so minor that the modified logo, as a whole, does not represent an original work of authorship

The modifications to the original logo are significant enough that the modified logo, as a whole, does represent an original work of authorship as a derivative work

The modifications are so transformative that the modified logo, as a whole, represents an entirely new original work of authorship.

In the first scenario, no copyrights would be established in the modified “KL2” logo so Nike would not have any copyrights to the original or modified “KL2” logo. In the second scenario, copyrights would be established in the modified “KL2” logo as a derivative work. However, the copyright owner of the pre-existing work has the exclusive right to prepare and authorize others to prepare derivative works based on the pre-existing work. See 17 U.S.C. §106(2). Where the copyright owner grants another party the right to prepare a derivative work, a new exclusive copyright in and to the derivative work comes into existence upon creation and fixation of the derivative work in tangible form. Therefore, if Kawhi granted Nike permission to create the modified “KL2” logo and the modified “KL2” logo is a derivative work, than Nike would own the copyrights to the modified “KL2” logo but not to the original “KL2” logo, unless there was an express contractual provision in writing that ownership of modified “KL2” logos would be transferred to Kawhi. In the third scenario, copyrights are established in the modified or new “KL2” logo and Nike would own the copyrights to the modified or new “KL2” logo, unless there was an express contractual provision in writing that ownership of modified or new “KL2” logos would be transferred to Kawhi.

Possible outcomes

Based on the complaint, Kawhi appears to be asserting that he owns the copyrights to both the original and modified “KL2” logos. This would be the first scenario discussed above where the modified “KL2” logo is essentially the same as the original ”KL2” logo and thus is not a derivative work or an entirely new original work of authorship. The complaint does not show the original “KL2” logo to currently allow a comparison between the original and modified “KL2” logos, but Kawhi will clearly be found to own the copyrights to both versions of the “KL2” logo if this argument is successful.

Based on Nike’s copyright registration, Nike is most likely is asserting that it owns the copyrights to the modified “KL2” logo as a new original work of authorship because Nike did not indicate in the copyright application that the work was a derivative work. This would be the third scenario discussed above where the modifications are so transformative that the modified “KL2” logo, as a whole, represents an entirely new original work of authorship. Again, the complaint does not show the original to currently allow a comparison between the original and modified “KL2” logos, but Nike will clearly be found to own the copyrights to the modified “KL2” logo if this argument is successful, unless it is also found that there was an express contractual provision in writing that ownership the modified or new “KL2” logos would be transferred to Kawhi.

Without the ability to currently compare the original and modified “KL2” logos, it seems safe to think that the modifications likely fall somewhere between the two above arguments and fit the second scenario discussed above where the modified “KL2” logo is determined to be a derivative work. The complaint seems to indicate that Nike was authorized to modify the original “KL2” logo. If so, Nike clearly owns the copyrights to the modified “KL2” logo so the only remaining question would be whether Nike can continue to use the modified “KL2” logo both under copyright and trademark law. It is important to note that a derivative work, prepared under a grant to prepare a derivative work before termination of the grant, may continue to be utilized under the terms of the grant after its termination. See 17 U.S.C. §203(b). In the absence of contract restrictions, the owner of the copyrights in the derivative work has the exclusive copyrights in the derivative work as a whole, including the right to make derivative works based on the derivative work as a whole — but not the right to create derivative works based on the original work after the original copyright owner’s termination of the right. See also 17 U.S.C. §304(c)(6)(A).

This is where the terms of the “logo agreement” and lack of a written agreement become important. Kawhi asserted that he permitted Nike to use the “KL2” logo “for the specific purpose of effectuating the Nike Agreement for the term of the contract”. Even if Kawhi can prove that there was agreement that Nike would stop using the modified “KL2” logo when the endorsement contract between Kawhi and Nike expired, Nike still owns the copyright in the modified “KL2” logo as a derivative work, unless there was an express contractual provision in writing that ownership of modified “KL2” logos would be transferred to Kawhi. However, Nike cannot use the modified “KL2” logo by contract and Kawhi cannot use the modified “KL2” logo because it would infringe Nike’s copyrights. If Kawhi cannot prove that there was an agreement in this regard, only Nike could continue to use the modified “KL2” logo. Of course, in either case Kawhi could use the original “KL2” logo or any other derivatives thereof.

Lessons learned

At this early stage and without the benefit of comparing the original and modified “KL2” logos, it appears that Kawhi will have difficulty in obtaining the results that he requested in his lawsuit. What could he have done differently? First and foremost, this dispute likely would have been avoided if a formal written contract was entered into at the time a “logo agreement” was reached about Nike using the “KL2” logo. This is always important regardless of the type of agreement. Second, Kawhi should have included clear terms in the written contract that he would be assigned ownership of any modified or new “KL2” logos authored by Nike, or at least that Nike could not use the original or any modified or new versions of the “KL2” logo authored by Nike after the endorsement contract expired. This is particularly important in instances like this where the other party may be a direct competitor in the future. Third, and maybe less obvious, the written contract should have expressly addressed all relevant intellectual property rights including both trademark rights and copyrights. This is particularly important when a trademark is a logo which includes a visual work of art.

]]>The United States Patent and Trademark Office’s intellectual property attaché program offers valuable resources to guide U.S. businesses in navigating IP systems abroadhttps://www.technologylawsource.com/2018/11/articles/intellectual-property-1/the-united-states-patent-and-trademark-offices-intellectual-property-attache-program-offers-valuable-resources-to-guide-u-s-businesses-in-navigating-ip-systems-abroad/
Wed, 28 Nov 2018 18:11:28 +0000https://www.technologylawsource.com/?p=5716The United States Patent and Trademark Office (USPTO) offers valuable IP-related business resources through an intellectual property (IP) attaché program. The program is structured to generally improve IP policies, laws and regulations abroad for the benefit of U.S. businesses and stakeholders, while providing country-specific IP-related materials and services to teach and inform. However, the program also makes representatives available who can act as points of contact for U.S. businesses to guide actions and to provide interactions with foreign governmental entities to addresses country-specific IP-related legal issues.

The representatives, designated as IP attachés, are based in various regions throughout the world, and serve for an initial period of two years, which can be extended up to a total of five years based on decisions of The International Trade Administration/Global Markets (ITA/GM) Assignments Office in consultation with the USPTO. During this time, they meet with host government officials to discuss changes in policies, laws and regulations related to IP systems that would be advantageous to the host countries. They also work with host government officials to provide training regarding U.S. IP laws to judges, prosecutors, patent examiners, and trademark examining attorneys. Further, the IP attachés provide public outreach programs to inform the public of the values of a strong IP system, and ensure a deeper understanding of IP filing, prosecution, and enforcement issues.

The IP attaché program was originally started when the U.S. posted an IP attaché to the U.S. World Trade Organization (WTO) in Geneva following a similar action by Japan …

The United States Patent and Trademark Office (USPTO) offers valuable IP-related business resources through an intellectual property (IP) attaché program. The program is structured to generally improve IP policies, laws and regulations abroad for the benefit of U.S. businesses and stakeholders, while providing country-specific IP-related materials and services to teach and inform. However, the program also makes representatives available who can act as points of contact for U.S. businesses to guide actions and to provide interactions with foreign governmental entities to addresses country-specific IP-related legal issues.

The representatives, designated as IP attachés, are based in various regions throughout the world, and serve for an initial period of two years, which can be extended up to a total of five years based on decisions of The International Trade Administration/Global Markets (ITA/GM) Assignments Office in consultation with the USPTO. During this time, they meet with host government officials to discuss changes in policies, laws and regulations related to IP systems that would be advantageous to the host countries. They also work with host government officials to provide training regarding U.S. IP laws to judges, prosecutors, patent examiners, and trademark examining attorneys. Further, the IP attachés provide public outreach programs to inform the public of the values of a strong IP system, and ensure a deeper understanding of IP filing, prosecution, and enforcement issues.

The IP attaché program was originally started when the U.S. posted an IP attaché to the U.S. World Trade Organization (WTO) in Geneva following a similar action by Japan during the Uraguay Round negotiations. The U.S. program was a success and eventually expanded to encompass representation related to other organizations. For example, the IP attaché in Geneva now is part of a mission to advance U.S. objectives as they relate not only to the WTO, but also to the World Intellectual Property Organization (WIPO), and the United Nations (UN). An IP attaché in Brussels covers issues relating to the European Union and European Commission.

The IP attaché program has also been expanded to address issues in specific regions having IP-related significance to the U.S. For example, in recent years China has had a rapidly expanding economy that has offered significant potential U.S. business opportunities. The USPTO has recognized that as the technological landscape of China changes and U.S. businesses look to introduce new products in an expanding market, inevitable difficulties will arise due to differences between the IP systems of each country.

To address these difficulties, the USPTO has based three IP attachés in China to work cooperatively with Chinese officials and to help U.S. businesses navigate the Chinese IP system and become aware of options for IP protection and enforcement. IP attachés in China cover national and regional issues, and are based in Beijing, Shanghai and Guangzhou.

The Beijing-based IP attaché covers a region including Beijing and the Shenyang consular districts.

The Guangzhou-based IP attaché covers a region including Fujian, Guangdong, the Guangxi Provinces and Hainan Island.

USPTO IP attachés are based not only in China, but also in Brazil, India, Kuwait, Mexico, Peru, Thailand and the Ukraine. As with the IP attachés in China, each IP attaché covers a large geographical region. For example, the IP attaché in Rio De Janeiro addresses issues not only related to Brazil, but also to Argentina, French Guiana, Guyana, Paraguay, Suriname, Uruguay and Venezuela.

Should you prefer to learn more about IP attachés and their roles through an interactive medium, the USPTO is offering an IP attaché round-table on December 12, 2018 which will involve presentations by IP attachés and a question and answer session. This is offered at no charge, and registration information can be found here. The meeting is open to members of the public to attend on a first-come, first-served basis.

The variations across countries regarding what IP can be protected, the terms of protection, and the enforcement of rights can be great and can lead to confusion and lost prospects and revenue. The USPTO IP attaché program is a valuable tool that can inform, prevent confusion, and lead to better business decisions and marketing outcomes. Consideration for use of this program should be given for individuals and entities considering world-wide or country specific IP endeavors. To learn more, visit the USPTO home link for the IP attaché program provided below, which includes multiple videos and additional publications related to the USPTO Attaché Program.

]]>Pilot program for PCT applications streamlines examination and search procedureshttps://www.technologylawsource.com/2018/10/articles/intellectual-property-1/patents/pilot-program-for-pct-applications-streamlines-examination-and-search-procedures/
Thu, 11 Oct 2018 20:55:57 +0000https://www.technologylawsource.com/?p=5711On July 1, 2018, the United States Patent and Trademark Office (USPTO) began a 3-year pilot program known as The PCT Collaborative Search and Examination Pilot (CS&E) Program, to streamline examination and search procedures for patent examiners in multiple countries. The program is a coordinated effort with patent offices from around the world, together known as the IP5 offices. Specifically, participating International Search Authority (ISA) members include the USPTO, European Patent Office (EPO), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), and State Intellectual Property Office of the People’s Republic of China (SIPO). This program is a continuation of two previous programs launched in 2010 and 2011, respectively, involving the USPTO, EPO and KIPO that laid the groundwork for this expanded program aimed at testing user interest, operational and quality standards, and the electronic platform.

Currently, upon filing a PCT application, applicants designate one of the IP5 offices to provide an international search report (ISR) and written opinion. However, upon reaching the national stage as applicants pursue applications in individual countries, applicants can be presented with country-specific search reports involving entirely new art depending on varying search criteria. This can place a burden on applicants and hinder cohesive world-wide prosecution strategies. The CS&E program addresses this issue by coordinating searches from each office, thereby providing a higher quality work product which is more likely to comprehensively identify and consider world-wide art. The CS&E program provides the advantages of having the searching performed by multiple examiners with different language capabilities …

On July 1, 2018, the United States Patent and Trademark Office (USPTO) began a 3-year pilot program known as The PCT Collaborative Search and Examination Pilot (CS&E) Program, to streamline examination and search procedures for patent examiners in multiple countries. The program is a coordinated effort with patent offices from around the world, together known as the IP5 offices. Specifically, participating International Search Authority (ISA) members include the USPTO, European Patent Office (EPO), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), and State Intellectual Property Office of the People’s Republic of China (SIPO). This program is a continuation of two previous programs launched in 2010 and 2011, respectively, involving the USPTO, EPO and KIPO that laid the groundwork for this expanded program aimed at testing user interest, operational and quality standards, and the electronic platform.

Currently, upon filing a PCT application, applicants designate one of the IP5 offices to provide an international search report (ISR) and written opinion. However, upon reaching the national stage as applicants pursue applications in individual countries, applicants can be presented with country-specific search reports involving entirely new art depending on varying search criteria. This can place a burden on applicants and hinder cohesive world-wide prosecution strategies. The CS&E program addresses this issue by coordinating searches from each office, thereby providing a higher quality work product which is more likely to comprehensively identify and consider world-wide art. The CS&E program provides the advantages of having the searching performed by multiple examiners with different language capabilities and an increased predictability of outcome. Importantly, at this time the CS&E program requires no extra cost.

As a first step in the CS&E program, applicants will still select an individual office for searching, and the selected ISA will perform a search and prepare a draft ISR and written opinion. The other four offices, designated as Peer ISAs, will review the draft, perform additional searching and provide comments back to the main ISA, which will then prepare a final ISR. The final ISR will take the views of the peer ISAs into account but will not refer to or explain any differences of opinion between offices. The sharing of documents and applications between offices will be done through the electronic system of the World Intellectual Property Organization (WIPO’s ePCT system). The contributions of the peer ISAs will be visible to applicants through ePCT once the ISR has been received and processed by the International Bureau, and will appear on the WIPO patent search database known as PATENTSCOPE once the ISR has been published. The CS&E program aims to provide earlier information from all IP5 offices. The current plan is to have the initial draft of the ISR and written opinion prepared in eight weeks or less from the time the main office receives a search copy, with peer ISAs contributing input within four weeks, and the finalization of the report taking an additional four weeks.

Despite the fact that this program is scaled-up from the previous pilot programs, the number of accepted applications is still limited. Each main ISA aims to accept approximately 100 international applications into the pilot, spread over the course of two years. Each office will also accept approximately 400 applications in its role as peer ISA. The third year of the program will be used to study the impact of the program on the national stage. Applicants are limited to 10 international applications.

If applications are submitted in a language other than English, the ISA will require an English translation within one month of the mailing date of the provisional acceptance of the application into the pilot. The IP5 offices have agreed that at a later point in the pilot, the requirement for an English translation will be reconsidered, and it is possible that a decision will be made to directly accept applications in other languages at that time. Participation in the pilot requires a request to be submitted with the application when filed, and though the form is available in Chinese, French and German, at this time the request submitted with the application should be in English. This request can be generated using the ePCT system, or can be uploaded in the form of an editable PDF available on the WIPO website.

Though this is a limited program, it is likely a glimpse into the future of searching and examination procedures, as it offers the opportunity for a more complete and high quality search as part of a program that will take into account applicant feedback to overcome any unforeseen difficulties of this coordinated effort. In submitting the request, applicants are required to agree to provide feedback at the end of the CS&E program upon ISA request. Additional information on the CS&E program can be found at the WIPO, USPTO and fiveIPoffices.

]]>Supreme Court holds ban on disparaging trademarks is unconstitutional – a victory for The Slantshttps://www.technologylawsource.com/2017/06/articles/intellectual-property-1/trademarks/supreme-courts-hold-ban-on-disparaging-trademarks-is-unconstitutional-a-victory-for-the-slants/
Tue, 20 Jun 2017 13:42:45 +0000http://www.technologylawsource.com/?p=3822On Monday, June 19, 2017, the Supreme Court released a decision in a high profile trademark case rejecting the Lanham Act’s rule against disparaging trademarks as being facially invalid and unconstitutional.

The Lanham Act, since its enactment in 1946, has contained a provision stating that a trademark should not be refused registration on the principal register unless it “consists of … matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” (See 15 U.S.C. §1052). Since the enactment of the Lanham Act, courts have routinely found that the disparagement rule does not violate the First Amendment because it does not preclude actual use of the mark in commerce nor prevent the establishment of common law trademark rights, but is rather just a bar to federal registration.

The Slants have fought a long battle to overturn this enduring precedent which began several years ago when Simon Tam, an Asian-American band member of The Slants, attempted to federally register the band’s name as a trademark. The USPTO generally applies a two part test when deciding whether a trademark is disparaging. The examiner must first consider “the likely meaning of the matter in question” by taking into account “dictionary definitions, the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or …

On Monday, June 19, 2017, the Supreme Court released a decision in a high profile trademark case rejecting the Lanham Act’s rule against disparaging trademarks as being facially invalid and unconstitutional.

The Lanham Act, since its enactment in 1946, has contained a provision stating that a trademark should not be refused registration on the principal register unless it “consists of … matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” (See 15 U.S.C. §1052). Since the enactment of the Lanham Act, courts have routinely found that the disparagement rule does not violate the First Amendment because it does not preclude actual use of the mark in commerce nor prevent the establishment of common law trademark rights, but is rather just a bar to federal registration.

The Slants have fought a long battle to overturn this enduring precedent which began several years ago when Simon Tam, an Asian-American band member of The Slants, attempted to federally register the band’s name as a trademark. The USPTO generally applies a two part test when deciding whether a trademark is disparaging. The examiner must first consider “the likely meaning of the matter in question” by taking into account “dictionary definitions, the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services.” If the examiner finds that the meaning “refers to specific identifiable persons, institutions, beliefs or national symbols” then they must ask “whether that meaning may be disparaging to a substantial composite of the referenced group.” A substantial composite does not necessarily mean a majority of the referenced group.

In 2011 the trademark office refused registration of THE SLANTS trademark finding that the mark was considered “disparaging” to Asian-Americans after applying the two part test. The USPTO cited that the term is a widely known derogatory term used to refer to those of Asian descent. Tam vehemently argued that he chose the name “in order to ‘reclaim’ the term and drain its denigrating force as a derogatory term for Asian persons.” The group throughout their career has “draw[n] inspiration for its lyrics from childhood slurs and mocking nursery rhymes” and has given its albums names such as “The Yellow Album” and “Slanted Eyes, Slanted Hearts,” and, in 2017, “The Band Who Must Not be Named.”

After exhausting the administrative appeal process at the USPTO with no success, Tam brought a federal lawsuit. In 2015, the Federal Circuit agreed with Tam and overruled established precedent finding that by denying a mark owner of the benefits of a trademark registration for a mark considered to be disparaging, the mark owner was in fact being punished for use of a mark consisting of unpopular speech. The Appeals Court found that many of the marks which were rejected as disparaging for conveying hurtful speech were still protected because the First Amendment protects hurtful speech.

The Supreme Court affirmed the lower court’s decision in a 39 page opinion with multiple concurrences. Justice Alito wrote that the disparagement provision of the Lanham Act “violates the Free Speech Clause of the First Amendment” because it “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.” (Matel v. Tam, 582 U. S. ____ (2017), 1-2).

The Government set forth three main arguments, contending that “(1) that trademarks are government speech, not private speech, (2) that trademarks are a form of government subsidy, and (3) that the constitutionality of the disparagement clause should be tested under a new ‘government-program’ doctrine.” Id. at 12. But ultimately the Supreme Court rejected these arguments and, for varying reasons, all eight justices held that the disparagement clause was unconstitutional because even if speech is demeaning or hateful, “the proudest boast of our free speech… is that we protect the freedom to express ‘the thought that we hate.’” Id. at 25.

This hard fought victory goes to Simon Tam and The Slants but its likely to have a huge impact on many others, such as the Washington Redskins whose marks were recently canceled for being disparaging to Native Americans. Though the Redskins’ case is still pending before the U.S. Appeals course, this ruling is certainly good news for them and others who seek the benefits of federal trademark registrations for disparaging marks. It should be interesting to see over the next couple of weeks or months if there is an uptick in the filing of arguably disparaging trademark applications at the USPTO.

]]>‘This could be heaven or this could be hell’ for Hotel Californiahttps://www.technologylawsource.com/2017/06/articles/intellectual-property-1/this-could-be-heaven-or-this-could-be-hell-for-hotel-california/
Fri, 09 Jun 2017 18:41:12 +0000http://www.technologylawsource.com/?p=3817Nearly 50 miles south of San Diego in Mexico lies an eleven room hotel which is currently making waves for its name, Hotel California, which is also the name of the Eagles classic single and album. The boutique hotel was originally named Hotel California at its 1950 opening but has since undergone several name changes. Ultimately the original name, Hotel California, was revived sometime after a Canadian couple bought it in 2001.

Although the Baja hotel has been around for over 60 years many of us are more familiar with Hotel California being associated with one of America’s greatest rock bands, the Eagles. Both the song and album, “Hotel California,” have arguably become legendary. The album won the 1977 Grammy Award for record of the year and is one of the best-selling albums of all time.

The Eagles recently took issue with the Baja hotel by filing a lawsuit on May 1, 2017 alleging that the hotel is infringing on their common law trademark rights in the name, Hotel California. The band alleges that the hotel is falsely creating an association with the band not only by operating under the name Hotel California, but also by selling merchandise referring to the “legendary” Hotel California and playing Eagles music throughout its facilities. The Eagles do not have a federal registration for “Hotel California” but have asserted their rights on the basis of a federal statute that prevents unfair competition and “false designation of origin.” Courts have consistently expanded the protection for …

Nearly 50 miles south of San Diego in Mexico lies an eleven room hotel which is currently making waves for its name, Hotel California, which is also the name of the Eagles classic single and album. The boutique hotel was originally named Hotel California at its 1950 opening but has since undergone several name changes. Ultimately the original name, Hotel California, was revived sometime after a Canadian couple bought it in 2001.

Although the Baja hotel has been around for over 60 years many of us are more familiar with Hotel California being associated with one of America’s greatest rock bands, the Eagles. Both the song and album, “Hotel California,” have arguably become legendary. The album won the 1977 Grammy Award for record of the year and is one of the best-selling albums of all time.

The Eagles recently took issue with the Baja hotel by filing a lawsuit on May 1, 2017 alleging that the hotel is infringing on their common law trademark rights in the name, Hotel California. The band alleges that the hotel is falsely creating an association with the band not only by operating under the name Hotel California, but also by selling merchandise referring to the “legendary” Hotel California and playing Eagles music throughout its facilities. The Eagles do not have a federal registration for “Hotel California” but have asserted their rights on the basis of a federal statute that prevents unfair competition and “false designation of origin.” Courts have consistently expanded the protection for unregistered marks allowing for protection almost as strong as those provided under the federal trademark act. This continued recognition and expansion by courts has allowed entrepreneurs, who may not have the resources to take advantage of federal registration, to assert some kind of rights over their business and product names without federal registration through use.

The Baja Hotel answered the complaint last week by denying the allegations and asserting not only that the Eagles do not have rights in the name but that the Eagles waived their rights in the name by waiting nearly four decades to assert their rights by claiming the defense of laches. Laches is an equitable doctrine that an infringer may assert when a trademark owner inexcusably “sleeps on its rights” and the delay prejudices the infringer. This begs the question, why did the Eagles wait so long to assert their rights to “Hotel California?” The Eagles bring their alibi which at this time is that the hotel operated under a different name for many years until recently changing to Hotel California in 2011. The hotel website outlines a sparse history of the hotel and various names but does distinctly state that “the present owners of the hotel do not have any affiliation with the Eagles, nor do they promote any association” but goes on to state that “many visitors are mesmerized by the ‘coincidences’ between the lyrics of the hit song and the physicality of the hotel and its surroundings.”

At this stage the case is relatively young and the parties positions are still developing, but it will be interesting to see the breadth of rights, if any, the Baja hotel has in the name Hotel California based on the spotty timeline of events which have unfolded since 1950.

]]>March Madness: the showdown between the Big Ten Conference and the NCAA – who is your number one pick?https://www.technologylawsource.com/2017/03/articles/intellectual-property-1/trademarks/march-madness-the-showdown-between-the-big-ten-conference-and-the-ncaa-who-is-your-number-one-pick/
Tue, 14 Mar 2017 15:45:30 +0000http://www.technologylawsource.com/?p=3800It’s the month of March, and most of us are highly aware of the NCAA’s basketball tournament that dramatically decreases work productivity and determines the college basketball national champion. If you’re thinking about entering the hype and using any of the NCAA’s trademarks in your promotions and marketing this month, it’s important to consider your use very carefully. The reason: the NCAA has trademarked a slew of marks associated with the tournament, such as “NCAA,” March Madness,” “Final Four,” the “Big Dance” and any corresponding logos. These marks are all federally registered trademarks of the NCAA, and the NCAA zealously defends them.

The NCAA has been using the mark MARCH MADNESS for over three decades and has recently attempted to claim further rights in the term “March”, quite possibly with respect to any services rendered in conjunction with sports-related entertainment services. This is how it happened. A little over a year ago, the Big Ten Conference filed a federal trademark application based on an intent to use the mark “MARCH IS ON!” for services related to sporting events and contests. The application was reviewed by a United States Patent and Trademark Office (USPTO) examiner, who ultimately determined that there were no conflicting marks that would bar registration of this mark and the application was published for opposition in August of 2016. The NCAA did not respond kindly to this application and after exhausting several extensions of time to oppose formally filed an opposition on Feb. 13, 2017.

It’s the month of March, and most of us are highly aware of the NCAA’s basketball tournament that dramatically decreases work productivity and determines the college basketball national champion. If you’re thinking about entering the hype and using any of the NCAA’s trademarks in your promotions and marketing this month, it’s important to consider your use very carefully. The reason: the NCAA has trademarked a slew of marks associated with the tournament, such as “NCAA,” March Madness,” “Final Four,” the “Big Dance” and any corresponding logos. These marks are all federally registered trademarks of the NCAA, and the NCAA zealously defends them.

The NCAA has been using the mark MARCH MADNESS for over three decades and has recently attempted to claim further rights in the term “March”, quite possibly with respect to any services rendered in conjunction with sports-related entertainment services. This is how it happened. A little over a year ago, the Big Ten Conference filed a federal trademark application based on an intent to use the mark “MARCH IS ON!” for services related to sporting events and contests. The application was reviewed by a United States Patent and Trademark Office (USPTO) examiner, who ultimately determined that there were no conflicting marks that would bar registration of this mark and the application was published for opposition in August of 2016. The NCAA did not respond kindly to this application and after exhausting several extensions of time to oppose formally filed an opposition on Feb. 13, 2017.

The NCAA in its opposition (read it here- Opp. No: 91232826), flimsy in length and detail, claims priority of use and a conclusory allegation that the Big Ten’s intended use is “likely to result in confusion, mistake, or deception with [the NCAA], or the goods and services marketed in connection with [the NCAA’s] MARCH MADNESS Mark, or in the belief that the [Big Ten] or its MARCH IS ON! services in some way [are] legitimately connected with, or licensed or approved by, [the NCAA].” The NCAA doesn’t cite much more information and does not even allege the degree of similarity between the marks, relatedness of goods or services, or harm supposedly caused by the Big Ten’s intended use of the mark.

Although it is clear the services are related and travel in the same channels of trade, whether or not the marks are confusingly similar is more of a challenge. When compared in their entirety side by side, MARCH IS ON! v. MARCH MADNESS, the only similarity is that both marks contain the MARCH term. It is possible to establish a likelihood of confusion based on marks sharing a single term, but if the term is descriptive confusion may be avoided entirely. The term MARCH in both cases describes when the NCAA and the Big Ten tournaments take place, the month of March. The NCAA may be overreaching because they are not limiting their use or objection to basketball related services but are ultimately trying to attempt to exclude others from using the word “March” in conjunction with any sports-related entertainment services.

It’s unclear whether or not the parties will be able to come to a resolution, but if they don’t the Trademark Trial and Appeal Board within the USPTO will ultimately decide whether or not the NCAA can claim rights to the MARCH term with respect to sports-related entertainment services. The opposition has since been suspended for “settlement negotiations” but the month of March is upon us and the “madness” is set to begin. Unfortunately the NCAA’s opposition against the application does not preclude the Big Ten from using the mark. The Big Ten is still free to begin or continue to use the MARCH IS ON! mark, while the negotiations or opposition are pending, unless agreed to by the parties. In order to stop any proposed or continued use, the NCAA would have to file a federal lawsuit seeking an injunction to actually stop the Big Ten’s use.

So if you plan to use any of NCAA’s trademarks in your promotions and marketing this month, it’s important to consider your use very carefully. Using the marks for a commercial purpose may imply some association with the event and sponsors of such events pay money for use of the marks, It’s safest to avoid use of the terms altogether in any marketing or promotional materials that serve a commercial purpose; otherwise, you increase the risk of hearing from NCAA. But this doesn’t mean that companies or individuals are entirely prohibited from using the marks, but it’s important to make sure that the marks are used in an informative context, such as reference to your Elite Eight or Final Four picks, or are used when discussing or commenting on the tournament or events surrounding the tournament.

]]>New gTLD program continues to gain momentum – nearly 6 million new domain registrations to datehttps://www.technologylawsource.com/2015/06/articles/intellectual-property-1/new-gtld-program-continues-to-gain-momentum-nearly-6-million-new-domain-registrations-to-date/
Mon, 08 Jun 2015 16:41:27 +0000http://www.technologylawsource.com/?p=2414The new gTLD program, considered to be one of the most important Internet developments in recent years, continues to gain momentum since ICANN delegated its first new gTLD back in October 2013. ICANN has delegated more than 600 new gTLDs to date. Of those delegated strings, 365 are open to the general public. A little more than 1 million new domains had been purchased at this time last year; now, that number is nearing the 6 million mark. And don’t expect things to slow down. New gTLDs continue to roll out in quick succession, spurring about 20,000 new domain purchases every day.

What’s selling?

During the past several months, the leaderboards have seen a great deal of movement, with each new gTLD jockeying for the top spot as they become available to the public. Though some have remained dominant, such as .xyz and .club, more recently released gTLDs including .网址 (URL or internet site) and .science have made huge strides.

The new gTLD program, considered to be one of the most important Internet developments in recent years, continues to gain momentum since ICANN delegated its first new gTLD back in October 2013. ICANN has delegated more than 600 new gTLDs to date. Of those delegated strings, 365 are open to the general public. A little more than 1 million new domains had been purchased at this time last year; now, that number is nearing the 6 million mark. And don’t expect things to slow down. New gTLDs continue to roll out in quick succession, spurring about 20,000 new domain purchases every day.

What’s selling?

During the past several months, the leaderboards have seen a great deal of movement, with each new gTLD jockeying for the top spot as they become available to the public. Though some have remained dominant, such as .xyz and .club, more recently released gTLDs including .网址 (URL or internet site) and .science have made huge strides.

If any of these gTLDs could be of value to you or your brand or could be a source of risk, please remember that as a registered agent of ICANN’s Trademark Clearinghouse, we can help develop and implement your gTLD strategy. For more information, Porter Wright is hosting three International Trademark Association (INTA) roundtables in our offices across Ohio to discuss experiences and evolving best practices related to the hundreds of new gTLDs that are publicly available or rolling out:

Cuba is a first-to-file country for trademark protection; in other words, a registration is awarded to the first applicant, even if that applicant has no legitimate claim to the trademark. Currently, an exception to the embargo permits U.S. companies to obtain trademark registrations — as well as submit patent applications — in Cuba. Proactively seeking a trademark registration in Cuba may avoid problems when the embargo is lifted.

An applicant can apply for a Cuban trademark registration using the international Madrid Protocol mechanism if it has an existing U.S. registration. A Cuban trademark application is screened against existing registrations by the Oficina Cubana de la Propiedad Industrial (OCPI). If a registration exists for the mark of the application, the OCPI will reject the application.

Generally, if your brand is well-known in the U.S., it is more likely that a trademark squatter might register your mark in Cuba to demand payment from you in exchange for the trademark. It is more expensive for trademark owners to obtain rights from others rather than to seek early trademark registration in first-to-file countries.

Cuba is a first-to-file country for trademark protection; in other words, a registration is awarded to the first applicant, even if that applicant has no legitimate claim to the trademark. Currently, an exception to the embargo permits U.S. companies to obtain trademark registrations — as well as submit patent applications — in Cuba. Proactively seeking a trademark registration in Cuba may avoid problems when the embargo is lifted.

An applicant can apply for a Cuban trademark registration using the international Madrid Protocol mechanism if it has an existing U.S. registration. A Cuban trademark application is screened against existing registrations by the Oficina Cubana de la Propiedad Industrial (OCPI). If a registration exists for the mark of the application, the OCPI will reject the application.

Generally, if your brand is well-known in the U.S., it is more likely that a trademark squatter might register your mark in Cuba to demand payment from you in exchange for the trademark. It is more expensive for trademark owners to obtain rights from others rather than to seek early trademark registration in first-to-file countries.

Though it may take time to reach normalized relations with Cuba, companies should consider Cuban trademark registration now so they are better prepared to enter the Cuban market.

]]>Katy Perry’s left shark – take 2https://www.technologylawsource.com/2015/04/articles/intellectual-property-1/katy-perrys-left-shark-take-2/
Thu, 30 Apr 2015 15:19:35 +0000http://www.technologylawsource.com/?p=2384In February 2015, I wrote a comment about Katy Perry’s ineffective attempt to assert copyright to stop a 3D printer from selling figurines similar to a shark costume used in her Super Bowl XLIX halftime show. In an attempt to establish rights in various expressions of that shark, Perry (Killer Queen, LLC) filed U.S. trademark applications for BASKING SHARK, DRUNK SHARK, RIGHT SHARK, LEFT SHARK and for three applications that depict designs of a shark. Each of the applications recite the goods to be used with the trademarks as cell phone covers, stickers, mugs, T-shirts, sweatshirts, hats, plush toys, action figures, certain costumes, certain figurines, and live musical and dance performances. Those applications have now been examined by the U.S. Trademark Office.

Trademarks, which provide protection for brands and other source identifiers, differ from copyrights, which cover original works of authorship. Although Perry did not come up with the term “Left Shark,” originality is not a requirement for rights in a trademark; however, other requirements may be of issue for her applications.

Perry’s word mark applications appear to be in line for allowance with some amendments, but two of the applications that cover a shark design — a front view of a standing shark and a side view of a standing shark— have been refused because the Trademark Examiner determined that the designs are of a character and do not function as trademarks. (Note: The third application for a shark design used a photo of an actual 3D shark figurine …

In February 2015, I wrote a comment about Katy Perry’s ineffective attempt to assert copyright to stop a 3D printer from selling figurines similar to a shark costume used in her Super Bowl XLIX halftime show. In an attempt to establish rights in various expressions of that shark, Perry (Killer Queen, LLC) filed U.S. trademark applications for BASKING SHARK, DRUNK SHARK, RIGHT SHARK, LEFT SHARK and for three applications that depict designs of a shark. Each of the applications recite the goods to be used with the trademarks as cell phone covers, stickers, mugs, T-shirts, sweatshirts, hats, plush toys, action figures, certain costumes, certain figurines, and live musical and dance performances. Those applications have now been examined by the U.S. Trademark Office.

Trademarks, which provide protection for brands and other source identifiers, differ from copyrights, which cover original works of authorship. Although Perry did not come up with the term “Left Shark,” originality is not a requirement for rights in a trademark; however, other requirements may be of issue for her applications.

Perry’s word mark applications appear to be in line for allowance with some amendments, but two of the applications that cover a shark design — a front view of a standing shark and a side view of a standing shark— have been refused because the Trademark Examiner determined that the designs are of a character and do not function as trademarks. (Note: The third application for a shark design used a photo of an actual 3D shark figurine from the printer that Perry originally accused of copyright infringement; the printer asserted his copyright against Perry, and the application was abandoned.)

In addition to the refusals, the specimen submitted to show use of the marks for live musical and dance services for the trademark design applications is a photo from the Super Bowl performance. The sharks in the photo do not depict the shark designs in the applications, so new specimens showing the shark design(s) actually used for a performance are required.

Other hurdles lurk in the depths. U.S. trademark law protects a trademark owner’s right to prevent non-authorized use of a mark that would cause consumer confusion regarding the source of the goods or services — but that owner must be a senior user of the mark. An Internet search for the words “Left Shark” returned a multitude of goods, including the same types of goods listed in Perry’s applications, offered by parties other than Killer Queen, LLC. Though such uses may not interfere with Perry’s registration of the marks (unless one of these third parties files an opposition to registration), Perry’s registrations may not be effective to stop an unregistered prior user from using the marks. Unregistered trademark rights are based on priority of use of a mark within a geographic territory.

Another requirement for a trademark is that it must function as a source identifier. A trademark application can be refused registration because a specimen submitted to show use depicts the mark as a general ornamental concept rather than a trademark. Trademarks typically appear on the label or packaging of an article. A large rendering of the shark design on a cell phone cover, sticker, mug, or T-shirt would most likely be seen as an ornamental design, not a source identifier, and would not be afforded trademark rights.

So, to avoid issues similar to those Perry may be facing, a trademark owner should use the exact design depicted in the application on tags, hang labels or packaging for goods. For live entertainment services, acceptable specimens include a photograph of the performance with the design mark displayed. Take care, however, to create trademark use rather than an ornamental display. Lastly, a determination of a suspected infringer’s first use of a disputed mark is necessary to avoid having the rights a trademark owner is attempting to assert against that “infringer” turned against the owner to result in the loss of those rights.